The Royal Bank of Scotland Group plc v. Dealwave
Claim Number: FA1001001301876
Complainant is The Royal Bank of Scotland Group plc (“Complainant”), represented by James
A. Thomas, of Troutman Sanders LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <rbsaply.com>, registered with Fabulous.com Pty Ltd.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On January 11, 2010, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 1, 2010 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@rbsaply.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <rbsaply.com> domain name is confusingly similar to Complainant’s RBS mark.
2. Respondent does not have any rights or legitimate interests in the <rbsaply.com> domain name.
3. Respondent registered and used the <rbsaply.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, The Royal Bank of Scotland Group plc, holds registrations for the RBS mark in association with its banking and financial services and related cards and printed materials. Complainant owns numerous trademark registrations for the RBS mark with the United Kingdom Intellectual Property Office (“UKIPO”) (Reg. No. 2,004,617 issued Jan. 5, 1996), the EU Office for Harmonization in the Internal Market (“OHIM”) (Reg. No. 000,097,469 issued Mar. 23, 1998), the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,185,538 issued Dec. 19, 2006), and numerous other countries worldwide.
Respondent, Dealwave, registered the <rbsaply.com> domain name on
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant owns multiple trademark registrations for the
RBS mark with the UKIPO, the OHIM, the USPTO, and other countries worldwide (e.g., UKIPO Reg. No. 2,004,617 issued
Complainant argues that Respondent’s disputed domain name is
confusingly similar to Complainant’s RBS mark pursuant to Policy ¶ 4(a)(i). Respondent’s
disputed domain name wholly incorporates Complainant’s mark; adds the generic
term “aply,” which is a misspelled form of the generic word “apply;” and adds
the generic top-level domain (“gTLD”) “.com.”
The Panel finds that a domain name that includes the identical mark of
Complainant combined with a generic term fails to distinguish the Respondent’s
disputed domain name and the Complainant’s mark. See Arthur
Guinness Son & Co. (
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges Respondent lacks rights and legitimate
interests in the disputed domain name. Once Complainant has put forth a prima facie case, the burden shifts to Respondent to demonstrate
its rights or legitimate interests in the disputed domain name pursuant to
Policy ¶ 4(c). The Panel finds
that Complainant has adequately established a prima facie case in these proceedings. Since Respondent has failed to respond to the
allegations against it, the Panel may assume that Respondent lacks any rights
or legitimate interests in the disputed domain name. The Panel, however, elects to consider the
evidence in record in light of the Policy ¶ 4(c) factors to determine if
Respondent has any rights or legitimate interests in the disputed domain name. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr.
26, 2006) (finding that “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate
interests in the disputed domain names under Policy ¶ 4(a)(ii),
and then the burden shifts to [the] respondent to show it does have rights or
legitimate interests.”); see also Am.
Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum
Complainant contends that Respondent is not commonly known
by the disputed domain name. The Panel
finds that the WHOIS information lists the registrant as “Dealwave,” which
demonstrates that Respondent is not commonly known by the disputed domain
name. Therefore, pursuant to Policy ¶
4(c)(ii), the Panel finds Respondent is not commonly
known by the disputed domain name. See Tercent Inc. v. Lee Yi,
FA 139720 (Nat. Arb. Forum
Respondent’s disputed domain name resolves to a directory
site with links to financial products and services that compete with
Complainant. The Panel finds that
Respondent’s use of the disputed domain name is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the
disputed domain name under Policy ¶ 4(c)(iii).
See Royal Bank of Scotland Grp plc et al. v.
Demand Domains, FA
714952 (Nat. Arb. Forum Aug. 2, 2006) (finding that the operation of a
commercial web directory displaying various links to third-party websites was
not a use in connection with a bona fide offering of goods or services
pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant
to Policy ¶ 4(c)(iii), as the respondent presumably earned “click-through” fees
for each consumer it redirected to other websites); see also Bond & Co. Jewelers, Inc. v.
The Panel finds Policy ¶
4(a)(ii).
Respondent’s disputed domain name redirects to a website containing links to third-party websites, some of which compete with Complainant. Such an activity clearly disrupts Complainant’s business, as Internet users seeking Complainant’s products will be diverted to sites featuring competing products. The Panel finds that this disruption of Complainant’s business and diversion of Internet users to Complainant’s competitors shows bad faith registration and use under Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names).
Respondent’s incorporation of the Complainant’s mark in the disputed domain name intends to attract Internet users seeking Complainant. When the Internet users are diverted to Respondent’s website and then click on any of the third-party links, it is presumed that Respondent is compensated on a pay-per-click basis. Additionally, due to Respondent’s use of Complainant’s mark in the disputed domain name, customers may believe they have reached a website sponsored by or affiliated with Complainant, which could impair Complainant’s reputation. The Panel finds Respondent’s efforts to mislead Internet users and attract Complainant’s business in order to receive commercial gain constitute bad faith registration and use under Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the Respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
The Panel finds Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <rbsaply.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: February 22, 2010
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